Student Athletes Can Avoid Common Trademark NIL Pitfalls In Trademark Applications
Photo by Caroline Justine on Unsplash
Student athletes are poised to profit from the licensing of their name, image, and likeness (NIL) on a wide array of products and services. To gain the most protection possible, they should consider filing a federal trademark application to protect their brand. Two common pitfalls, unfortunately, often prevent applicants from securing the protections of a federal trademark registration.
Wrong Trademark
The first question a student athlete must ask is: What is my brand/trademark? Is it my name, my last name, a logo, or a combination? It’s possible to trademark a first and last name. It is much harder to secure a trademark registration for a student athlete’s surname. Trademark applications for surnames (last names) are often refused as not operating as a trademark but functioning primarily merely as a surname. To sum it up; you can’t have exclusive rights to your last name except in very specific circumstances, nor can you automatically stop someone else from using their last name, even if it’s the same as your last night. Protecting your name outside the U.S. is tougher, even for a famous professional athlete… ask Michael Jordan.
Maybe the student athlete decides to file a design mark (logo), and then they don’t use the same design on the products or services they offer for sale in interstate commerce. If the design mark submitted with the trademark application doesn’t match what is used in interstate commerce, the student athlete’s trademark application may be initially refused.
Wrong Trademark International Class
The United States Patent and Trade Office (USPTO) has 45 separate International Class designations for goods and services; the student athlete’s trademark application must fall within at least one of those classes. Applications reflecting multiple classes are not only acceptable, but they are also useful.
Take a collegiate swimmer, for example. Swimwear and headgear could be a great fit for branding and utilizing the student athlete’s NIL. They should consider filing a trademark application in International Class 025.
What if the student athlete has a million followers on Instagram, TikTok, or other social media platforms? The student athlete might be perfect as a social media influencer for third-party brands. And will need to protect his/her NIL for the purposes of promoting the brands, goods, and services of others. Services covered by International Class 035 include: Sponsorship or endorsement deals for third-party goods or services; Brand ambassadors; Posting about a third-party product or service on the applicant’s social media accounts.
Once the trademark application is submitted, you cannot expand the list of classes or the description of goods or services named in the application within each class; you can only narrow the description or delete classes.
Respond to an Office Action
Typically, within four to six months after you file your trademark application, a trademark Examining Attorney working for the USPTO reviews it. If your application is refused, you (or your attorney of record) receive an Office Action.
The Examining Attorney lists any legal problems with the applied for trademark, as well as with the application itself. The applicant must resolve all legal problems in the Office Action before the trademark can be registered.
Most Office Actions fall into two categories:
Requirements — legal problems with the application must be resolved through revisions, edits, or clarification
Refusals — The chosen trademark could be confused with another previously registered trademark
A common example of a requirement is that your application be more specific as to the good or service offered. “Athletic wear” may be too vague, while “children’s T-shirts, athletic socks, novelty underwear, and athletic shorts” may fulfill the requirements of TMEP 1407.02(c), “Unambiguous Identifications.”
You may have to provide a written response to fix major legal issues, or you may be able to simply call or email the Examining Attorney for non-substantive problems.
Hire a Texas Trademark Lawyer
For help
selecting your trademark,
avoiding filing in the wrong classes of goods and services, or
properly describing your goods and services in the trademark application,
consult a qualified Texas trademark and NIL lawyer. The student athlete deserves the same financially rewarding opportunities enjoyed by Olympians, MLB, NBA, and NFL players, all of whom have registered trademarks in form of words, symbols, or phrases.
Contact me today at Bennett Law Office, PC, or feel free to phone/text my office at 972-244-3210. I look forward to protecting the rights of our college athletes, Texas schools and athletic conferences, and potential sponsors.
